Black Mustang Club calendar is go, Ford releases images under Creative Commons -- a he said/she said blow-by-blow

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Earlier this month, I blogged about The Black Mustang Club -- a fan-club for owners of Ford cars -- being told by CafePress that they weren't allowed to publish their calendar because Ford had contacted CafePress and demanded that the calendar be removed on the grounds that it infringed their trademarks.

So what happened? After a few rounds of correspondence with CafePress, here's where I've netted out:

* Ford had previously sent very stern letters to CafePress about similar projects, warning them in no uncertain terms that CafePress had better not produce projects similar to the Black Mustang Club Calendar

* CafePress contacted the Black Mustang Club and either said "Ford told us that you can't do your calendar, because they control all images of their cars" or CafePress contacted the Club and said "Ford told us that we can't can't do projects like your calendar, because they control all images of their cars" (I haven't been able to reach the Black Mustang Club people to confirm which it was, though they certainly wrote that it was the former)

* Ford has since contacted CafePress and The Black Mustang Club to say that this project and future fan-run projects (that don't imply an endorsement by Ford) are OK -- this is consistent with trademark law and a reasonable position for them to take

There's a couple of interesting lessons for Ford and CafePress to take away from this. For Ford (and companies like it), the lesson is surely to tighten the reins on your legal department. When they send stern letters to online service providers that threaten legal action, the natural outcome is that OSPs are going to get gun-shy -- and they'll tell your fans that they can't do anything and blame it all on you. The usual overkill approach from corporate counsel will come back and bite you on the ass.

For CafePress, the lesson is to take your customers' side when the law is with them. Even if Ford did tell CafePress to kill the BMC calendar, they'd have been wrong. The BMC calendar is legal -- even without Ford's blessing -- and when you protect yourself from legal liability by shutting it down, you incur PR liability by seeming like a bunch of candy-asses who can be bullied into submission by a memo from some white-shoe legal goon from a Fortune 100. Word gets around.

I don't know that we'll ever be able to find out whether CafePress told BMC that Ford was down on their specific calendar, but at the end of the day, it doesn't really matter. Ford's earlier letters on the subject clearly scared the hell out of CafePress, and CafePress's lawyers clearly need a refresher course in trademark and liability.

There's one very good piece of news to come out of this, though: Ford's program to let its fans do whatever they want with high-quality shots of the cars is a damned forward-looking and decent bit of strategy.

We have spoken to both CafePress and the Black Mustang Club and explained the situation about the Black Mustang Club’s calendar to everyone's satisfaction. Ford has no problem with Mustang or other car owners taking pictures of their vehicles for use in club materials like calendars, including the logos as they appear in the pictures of the vehicles. What we do have an issue with are individuals using Ford’s logo and other trademarks for products they intend to sell. Understandably, we have to take the protection of our brands and licensing very seriously.

Ford did not send the Black Mustang Club a “cease and desist” letter telling them that they could not use images of their own cars in their calendar. The decision not to allow the calendars to be printed was made by CafePress because we had contacted them in the past about trademark infringements on products they sold.

CafePress and Ford will work together to clarify and resolve any future issues.

The Black Mustang Club and other Ford enthusiast clubs are encouraged to take pictures of their own vehicles for use in calendars or other materials as long as they don't use Ford trademarks in products that will be sold. Clubs or enthusiasts who have questions regarding this should contact Ford by emailing branduse@ford.com, we are happy to help.

In fact, Ford is contributing to these types of enthusiast programs in forums, blogs and other social media platforms through our Social Media Press Releases at ford.digitalsnippets.com

I think it is great that the Black Mustang Club, and any other enthusiast club, would take pictures of their own vehicles for use in calendars or other materials.

I’m looking forward to purchasing a copy to hang in the garage next to my Mustang (even if mine isn’t black).

Sara Moufarrige-Doepke, PR Coordinator, CafePress:

1. We received a Cease and Desist from Ford several months ago. In
this document Ford asked that we remove (and continue to remove) user
created product images that feature Ford cars and logos. This included
current products, and future products.

2. In compliance with this request we remove images as they come
up, and then let the CafePress user (in this case BMC) know that they
have been removed or pended, and why (in this case a general Cease and
Desist from Ford).

3. Over the course of last week we spoke with Ford and reached an
agreement - Ford has revised their initial position making the photos of
individual's cars usable on CafePress merchandise.

To confirm, yes - we did receive a notification from Ford which covered
current and future user-created CafePress products featuring Ford cars
and logos. And no, this Cease and Desist was not directed specifically
at the BMC - however the BMC content in question was prohibited in the
general Cease and Desist we received several months ago.

I got some more info from the folks at cafepress and according to them, a law firm representing Ford contacted them saying that our calendar pics (and our club's event logos - anything with one of our cars in it) infringes on Ford's trademarks which include the use of images of THEIR vehicles. Also, Ford claims that all the images, logos and designs OUR graphics team made for the BMC events using Danni are theirs as well. Funny, I thought Danni's title had my name on it ... and I thought you guys owned your cars ... and, well ... I'm not even going to get into how wrong and unfair I feel this whole thing is as I'd be typing for hours, but I wholeheartedly echo everything you guys have been saying all afternoon. I'm not letting this go un-addressed and I'll keep you guys posted as I get to work on this.

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A couple of years ago I was teaching a class at ye’ community college on digital convergence and used a tattoo design that I had done (and been tattood with.)

This design had actually been sitting in my Cafepress for over year when I ordered a t-shirt (and other products) as an example for this class.

They billed me for the order, but shortly after that I got a snarky e-mail that it was violation of a known copyright and wasn’t allowed.

1) I pointed out that it was a derivate work, and as the artist of said work I held the copyright of that specific design since over 30% of the design had significantly changed.

2) The t-shirt was instructional material for a class along with several other products I was ordering, and provided a syllabus to the class and requisite information of the college, including my edu address.

They replied with the exact same form letter as before. When I requested a real human being read and respond to my letter, a follow-up e-mail indicated that the “offending” design had been removed.

Logging in actually revealed that ALL my designs had been removed.

At my insistence that they restore all my deleted items, and either process the order or reverse the charge on my credit card I received a final e-mail informing me my account had be revoked and no further contact would be acknowledged. Nor were any follow-up e-mails responded to.

Nor was the charge rescinded. (I eventually had my credit-card company issue a chargeback.)

It took me 5 minutes to recreate my order with Zazzle, and I’ve never had a problem with them since.

Fydebeetles, you’re barking up the wrong tree. Any copyright interest in the silhouettes of the cars, etc (“design rights”) are thin at best and clearly overridden in this case by doctrines like fair use (USA) and fair dealing (elsewhere).

You need to look to trademark to find the doctrine at issue here. And trademark only extends to uses of the mark that mislead the public about the origin of goods or services. Thus a use that does not cause a member of the public do believe that Ford endorsed it is not covered by trademark law, either.

As to whether there are “no additional rights than anyone else,” this is untrue as a point of law. As the owner of a physical object, many rights are conferred upon you by doctrines like first sale.

In Europe, first sale is somewhat eroded by droit morale and its cousins, but it’s simply untrue that owning a painting confers no rights upon you (and even less true in the US, where droit morale doesn’t exist, and to a lesser extend in the UK, where it is alienable).

When this story broke initially, it hit every car blog, mailing list & forum I’m on. They have been full of rampant Ford bashing, speculation and hyperbole, and several of these are lists for Ford fans.

What bothers me most is that I can guarantee you that the followup that states this is a Cafepress issue more than a Ford issue, and that Ford has done their best to clarify the problem and fix it will *NOT* appear on at least 80% of the places the initial story appeared. In fact I would put even money on the ranting uninformed discussion continuing beyond this announcement on at least one of them.

People seem to love a chance to rant and rail against the failings on the part of any major corporation, even (or possibly especially) one they feel some sort of connection to or affinity for.

Pixel’s got it.. people just over react way too readily. I even commented on the last post that if they contacted PR they would probably get permission. Ahh well, hopefully this helps clear the way for future enthusiast calendars and such.

A question : Was it okay for the BMC to make the calendar even without Ford’s permission because they weren’t intending to sell it? Or would have it been okay for them to make a profit off these calendars even over the objections of Ford?

We had the same problem with Ford and Cafe Press a couple years back, where the band was posed in front of a 67 ‘Stang for a promo shot, and when we tried to order merchandise with that pic, Cafe Press said it violated Ford’s copyright.
sheeesh! they should have paid US for using their brand in our promo!

There’s some commercial out there with someone driving a classic ’65 Mustang. The thing one notices as they pull up is that the horse in the grille has been covered with black cloth. Thank goodness they did that or I would have bought their product thinking they produced Ford Mustangs!

I spend more of my time as a lawyer telling lawyers on the opposing side that their knee-jerk “conservative” stance will only lose them customers, and money, when I tromp them in court. Taking a “cover all the bases” approach to advising your clients, as Cafepress’ counsel so clearly did, will only cost them future business– for sure, I’m never going to send them any t-shirt business.